Federal Circuit: Software is not Patent Eligible unless Claimed as a Process or Physical Object

In an interesting – though non-precedential – opinion, the Federal Circuit has ruled that a “speech-recognition interface” software lacks subject matter eligibility “because [the claims] are not directed to one of the four statutory categories of inventions identified in 35 U.S.C. § 101. The court writes: “[s]oftware may be patent eligible, but when a claim is not directed towards a process, the subject matter must exist in tangible form. Here, the disputed claims merely claim software instructions without any hardware limitations.”

Recent action in patent eligibility doctrine has primarily focused on the judicial prohibitions against patenting abstract ideas, laws of nature, and natural phenomena. However the statute does have some meat of its own. In particular, Section 101 particularly creates eligibility for four categories of inventions: processes, machines, manufactures, and compositions of matter. Inventions that cannot fit within the four statutory categories are not patent eligible.

Machine, Manufacture, Composition of Matter: These terms go back to the 1793 patent act and have been interpreted in dozens of cases. Here, the court summarizes:

Except for process claims, “the eligible subject matter must exist in some physical or tangible form.” Digitech, 758 F.3d 1344 (Fed. Cir. 2014). To be considered a machine under section 101, “the claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’” Id. (quoting Burr v. Duryee, 68 U.S. 531 (1863)). Similarly, “[t]o qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Likewise, a composition of matter requires the combination of two or more substances and includes all composite articles.” Id.

The question in this case is whether Claim 60 of AllVoice’s U.S. Patent No. 5,799,273 fits within any of the four categories. The claim reads as follows:

60. A universal speech-recognition interface that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different computer-related applications, the universal speech-recognition interface comprising:

output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text; and

audio playback means for playing audio data associated with the recognised words.

In considering the claim, the court found that no tangible or physical object claimed. Rather, the patentee admitted that the claim elements are all software elements that do not expressly require hardware elements. Without any actual “machine” or “composition of matter”, the claim failed for lack of subject matter eligibility.

243 thoughts on “Federal Circuit: Software is not Patent Eligible unless Claimed as a Process or Physical Object”

Not technically but Intellectually correct, may I share with you that:

As the inventor of USCIIIIII CODE for EchoLogical Machines which is the capability they are dreaming about, of merging The Human Mind with The Electronic Brain in the art of Universal Automatic Comprehension in any natural language — my point that as no one can claim to own A Natural Language, a standard like USCIIIIII CODE is more advanced then ASCII CODE but also as it is the way we write, it should not be a patent I own as its developer, but as its developer, even William Shakespeare would not want to own English but rather know he has made it a better language acceptable to all. A cultural innovation should not be under corporate ownership, and this is why my invention has not been successful as it calls for higher moral thinking no one is supporting so I keep holding on to the technologic solution all high technology companies are searching for.
China’s STOP to Apple’s “siri” is just the beginning of the shift in realizing my thinking has been the proper way to look at patents and limitations of the patent system as to new arts, as it is in the pre-patent pre-partnering proposal I also own and employ successfully for my other inventions.

The way a language works, is not made of materials yet a machine can operate by it only if the method/system is complying to the natural miraculous created mind which is not like the brain, so the Federal Circuit is on the proper way of thinking that just software can be made in many ways yet only one way can be applicable if it does as claimed, deliver quality intelligence as in our cases of Highest Quality Concise Intercultural Translations — that no software application developed actually delivers as of yet, after more then half a century of impressive evolution in computing the industry has delivered.

Why is AllVoice Computing PLC v. Nuance Communications, Inc., No. 06-1440 (Fed. Cir. Oct. 12, 2007) not mentioned in this decision? In that earlier case, the Federal Circuit reversed district court rulings that Claims 60 – 68 were indefinite and that the “computer usable medium” claims were invalid for failure to disclose the best mode of practicing them.

It would be interesting to know just how the infringement cases were laid out in both AllVoice lawsuits. It would be interesting to know just how the district court held most of the asserted apparatus and method claims to be indefinite and why AllVoice did not appeal that decision.

In AllVoice Computing PLC v. Nuance Communications, Inc. decision, I see that the panel found corresponding “structure” in the specification to support all three “means” expressions of Claim 60. But, in pursuing Microsoft, AllVoice conceded that these “means” limitations were limited to software instructions without any hardware limitations. Why was AllVoice forced to make this concession?

Joe, how does one infringe a claim to software? In post 22 below, the Federal Circuit has already ruled that a claim to software is not infringed by selling or offering to sell the software.

Consider the know how to build an infringing machine. Does the sale of the know-how infringe a patent on the machine? Obviously, the use of the know-how might arguably induce infringement; but inducement requires proof that the inducer knew the use of the know how to make the patented machine, to perform the patented process, etc., would be patent infringement. But that assumes a patent on a machine or an otherwise eligible process.

Courts are chipping away a B-claims without actually confronting them.

According to the blurb at 22, what was claimed in that case was a process (not software). A claim to software is best made as a claim to a computer readable medium carrying instructions.. THAT would be infringed by manufacture or sale…

Ned is just being his usual obtuse self attempting to conflate what software is (a machine component and manufacture in itself) with the execution of software (which falls into the category of process).

This is something that is extremely easy to keep straight and appears to be being purposefully confused just to cloud the discussion.

Thanks for the replys, but they do not address my questions about the arguments made and the findings made in the two cases. Does anyone have any insight on how and why they were pursued b the plaintiff?

Ricoh was an inducement to infringe case. The Federal Circuit remanded the case back to the District Court to determine whether there was substantial non-infringing uses. So, the issue was NOT that selling software that performed a software patent DOES NOT infringe, but if there was substantial non-infringing uses, THEN there is no inducement to infringe.

“We first turn to Ricoh’s claims that Quanta directly infringed the ‘552 and ‘755 patents through the sale or offer for sale of software that causes the accused drives to perform the claimed methods.

…

“As did the court in NTP, we conclude that we need not definitively answer this question to conclude as a matter of law that Quanta did not sell or offer to sell the invention covered by Ricoh’s method claims.

In this case, Ricoh has mistakenly confused software with a process as that term has been interpreted by this court. As the court in NTP recognized, “a process is nothing more than the sequence of actions of which it is comprised.” 418 F.3d at 1318. This court has also stated that a process “consists of doing something, and therefore has to be carried out or performed.” In re Kollar, 286 F.3d 1326, 1332 (Fed.Cir.2002). In contrast, software is not itself a sequence of actions, but rather it is a set of instructions that directs hardware to perform a sequence of actions.

…

“The cases noted here make clear that the actual carrying out of the instructions is that which constitutes a process within the meaning of § 271(a). With this understanding of “process” in mind, we agree with the reasoning of NTP that the application of the concept of a sale or offer of sale to the actual carrying out of a sequence of actions is ambiguous.

…

“However, because the allegedly infringing sale in this case was the sale of software (i.e., instructions to perform a process rather than the performance of the process itself), we need not determine whether a process may ever be sold so as to give rise to liability under § 271(a). Accordingly, we hold that a party that sells or offers to sell software containing instructions to perform a patented method does not infringe the patent under § 271(a).”

“Next up, your heartbeat: “There’s a new kind of device called the embedded defibrillator: it’s a pacemaker implanted in the chest that monitors heartbeat irregularities and releases energy pulses to correct anomalies. The problem is that sometimes the software fails to detect the heartbeat, and we’re hoping to fix that.”

The technology, in the form of an algorithm, will soon be embedded into these pacemakers.”

US claims employ a pseudo-grammar that has its own rules. If you don’t know those rules, you’re going to get yourself and your clients in trouble. That’s the lesson from this case, not whether or not SW is patentable.

All of the claims begin with an uppercase letter, and yet they all are read to include the introductory “I claim . . .” etc. The direct object of the “I claim” clause is the preamble of each independent claim as modified by the rest of the independent claim and its dependents. Everything else in a claim set acts as a limitation on the preamble of the independent claim – including structural elements (if there are any) and steps (if there are any).

No matter how complex the preamble, somewhere in there there is a noun, which is the subject of the preamble clause, if it is a clause. Otherwise the noun is the direct object of “I claim.” That noun is the key to the 101 analysis. That’s what this case is really about.

It stands to reason that all one has to do to avoid a 101 punch-up is to be sure that the subject of the preamble of each independent claim clearly and unambiguously falls within the four statutory categories OR improvements thereon. Pick that noun out, look at it, and be sure it is something that would clearly be considered a process, composition, machine, or manufacture (whateverthehell those last two terms mean).

AV botched it when they claimed in Claim 60 an “interface” instead of an “interface device.” In the broad view of the courts, there is no doubt that “interface device” would avoid any 101 challenge, whether as a machine or manufacture I’m not sure. But when Claim 60 was written as “I claim an interface . . . “ it makes no difference what else the claim says, it’s 101 road kill. And it should be. Maybe Phillips could save “interface” from a 112 rejection, but forcing the public to dig through the spec to determine what statutory class the noun “interface” was meant to convey is nuts.

Claiming an “interface” was a daft mistake made by someone who probably should have been better supervised by someone who knew what they were doing. Allowing the claim was equally daft, again, probably by someone who should have been better supervised by someone who knew what they were doing.

It’s a simple rule: The subject matter of what you claim is what the preamble of your independent claim says you claim, therefore make sure the preamble says you claim something that is clearly and unambiguously within the statutory classes. Avoiding 101 conflicts is so simple it amazes me that these issues ever reach the courts.

Sometimes I wonder whether there isn’t a class of patent lawyers who set up their claims to fail on examination and/or to attract litigation – it’s gotta’ be good for the bottom line.

>Claiming an “interface” was a daft mistake made by someone who probably should have been better supervised by someone who knew what they were doing. Allowing the claim was equally daft, again, probably by someone who should have been better supervised by someone who knew what they were doing.

Except in reality the claims are supposed to be interpreted as one skilled in the art in light of the spec would interpret them. There is no problem with the claim but with the fed. cir. and the SCOTUS.

But, I agree with you that the lesson is you better be explicit and put everything in there because some science illiterate judge that Obama hired off the street is likely to drink the cool aid of Lemley and invalidate the claim because it could be performed by an angel on a pinhead.

Sadly, while the advice on the surface is fine and the attempt of the advice giver is clearly one of being helpful, the state of 101 “jurisprudence” (i.e. how mashed is the nose of wax) belies the fact that the advice will not in fact be helpful.

One only has to look at Alice and the fact that both parties had stipulated that the statutory category aspect had been met and that issue not before the Court to see that even if a simple and explicit grammar is chosen, the Court will still make the accusation of “scrivener tricks,” will still “Gist” to whatever they want to and will still deign to write the law they want (implicitly, explicitly, or otherwise).

” both parties had stipulated that the statutory category aspect had been met”

Surely you’re pulling my leg. (I know, quit calling you “Shirley.”)

The parties’ stipulation is irrelevant as to whether claimed subject matter conforms to a statutory class. The patent statutes serve a public protection role, and that’s why “activist” judges play the sua sponte card from time to time — to uphold the law, which is why they get paid. Just because it may be in both party’s interest to ignore a statute during litigation, doesn’t give them license to do so.

The parties stipulation is very much relevant to the issue before the Court (remember that the Court still needs a case or controversy and we have this little thing against advisory opinions to contend with)

In fact, the laws of nature require that you remain outside the black hole as seen from Anne’s perspective. That’s because quantum physics demands that information can never be lost. Every bit of information that accounts for your existence has to stay on the outside of the horizon, lest Anne’s laws of physics be broken.

Although I do not subscribe to your collectivist conception of “tribe”, nor to your apparently odd definition of “parody” and “funny”, I will accept that my post does reveal that I “subscribe” to the view that:

If you are of a mentality which claims that intangible non-physical things also can actually perform these operations in reality, I will concede that I cannot be but overwhelmingly astounded by your fantastical imagination, flexibility, and casual indifference with which you can regard reality, all of which far exceed my own capacities thereof.

Sadly MM you are the parody. A parody of a paid blogger jeerer reality and doing everything possible to use the judicial system to do what the legislative system is supposed to do. Very sad. Each of your posts is an affront to civilization.

Assuming a computer is within the physical realm it operates upon physical principles according to its physical make-up, configuration, and mechanistic (rather than “spiritual” or “mystical”) functioning. How does any nonphysical intangible have any causative effect on a physical machine and physical reality?

How do you suppose your non-physical “software” makes a physical machine operate?

Anon2, “Assuming a computer is within the physical realm…” Your question assumes that the claim was to a machine.

Software itself no more that a set of instructions that can be embodied in many different forms, including executable. I assume you did know this. Software can be source code written in a book. It can be compilable instructions written on punched cards, tape, disks or the like. Only in a very final form is the software executable. But unless one is specific about the form, any form is covered, right?

Now if you want to claim a programmed computer, there are ways of doing that. But the programmed computer is not a new machine unless the programming is part of the machine in a physical sense. Such programming is known as “firmware.”

Software BY definition is not part of computer. Did you know THAT?

There are a lot of assumptions in you post, many of them simply wrong from a technical point of view.

As a nominalist you may have difficulty conceptualising the following but I invite you to indulge me:

Suppose you were a detective and you had to apply reason to “uncover” a mysterious thing, an “ish de triddle”.

Suppose now your only evidence regarding what it was a definition:

An “ish de triddle” comprises:
something for receiving data;
a further thing for outputting data to allow processing of data; and
another further thing for playing audio data associated with some of the data.

Now ask yourself, is “ish de triddle” on the basis of this definition a mere idea, mental content, abstraction, non-functional descriptive material… ? Can any of these things actually meet the definition of “ish de triddle”?

What about an un-programmed computer? No instructions, no OS, no electricity, no connections, no configuration? Can it qualify?

Lastly what in actuality could meet the definition? What needs to be included in the totality of “ish de triddle” so that it actually works in reality?

If you believe your “source code written in a book” actually qualifies as “ish de triddle”, i.e. that the definition literally reads on a specific portion of the book, and consequently that the writing in the book actually “comprises” components that somehow magically interacts with the physical world, we cannot speak anymore of this, as we live in completely different universes.

Those eager to misconstrue and eager to not understand (because misconstruing and not understanding fits with their agenda to limit patent rights at the front gate) will continue to do so even (especially) when asked to open their eyes, look at the point put upon the table of discussion, understand that point, and integrate that point into the dialogue moving forward.

I have been on this path many times with Ned Heller. The moment he sees where the logic must lead to is the moment that obfuscations, treks into the weed, outright derailment of the conversation or even simply stopping the discussion (with the silence screaming out the obvious) occurs.

If we take the modulation of an AM or FM signal broadly as embodying the “data” (encoding the audio information recorded and eventually to be reproduced) you have a fine example of an “ish de triddle”: including an antenna operatively coupled to demodulator circuitry operatively coupled to an amplifier and speaker.

Sounds just like the anti-software patent folks Mr. Snyder. We both know that the inte11ectual dishonesty comes after their laughter when they realize that fighting the points I put on the table of discussion will result in their losing.

“Now we have In re Bernhart that says software physically modifies a computer. But that case cited no expert opinion to support that notion, and it is contrary to scientific fact.”

Premise: (a) Memory is a physical article.

Premise: (b) Memory undergoes a state of physical change when software is installed causing this physical article to have a different magnetic polarity or electrical charge (e.g., physical changes due to data storage). Further physical changes occur as data is stored, modified, and deleted.

How is it again a modification to the computer isn’t occurring when software is installed? What scientific proof do you have to dispute either (a) or (b)? I believe the conclusion of these two premises is irrefutable.

If one were to take this very literal interpretation of the phrase “physically modifies”, then the computer is physically changed by installing software much in the same way that a digital clock is changed when you set the time.

To be sure, a computerized device, if installed with software, will behave differently than the exact same device without the software installed. This must be due to the presence of a physical change in the device, however you define it. I don’t believe that anyone here would want to attribute a soul or mind to the computing device that is immaterial…

The windup toy is not analogous. The unwound toy is configured to perform a wind up behavior by its physical arrangement of parts.

Last time I checked, programmable information-processing machines computers are “configured to be programmed to process information.”

The device without programming is 100% unable to perform the claimed process without the software.

I’m pretty sure that would depend on the claimed process and what software the programmable device is already running.

But your argument does illustrate one of the weirdest assumptions of many software-patenting proponents, i.e., they almost always behave as if computing devices and the use of computing devices to carry out information proessing logic — any kind of information processing logic — was conceived of just two moments before their favorite patent application was filed. In the intervening moment, of course, the world was filled with skilled programmers who only need glance at the claim to understand how to program any and every computing device to perfectly execute the recited functionality. And then the PTO and the judiciary just bury their heads in the sand and go along for the ride because — what was the argument? — oh right, software programmers are “second class citizens.” Or something like that.

We’re talking about patents, aren’t we? Specifically, we’re talking about claims to “new” machines and media that have no purpose except to be configured to process information.

So you say you have some plastic, metal and silicon composition that “determines” some factual aspect about some information. You allege that there is some new physical attribute to your composition responsible for that functionality but you refuse to describe that new physical attribute in your claim in a manner that distinguishes it from the physical attributes of the most similar compositions in the prior art. Instead, you just toss out terms like “determine” in your claim — almost as if your device had a mind.

This is how the game is played. The best part is when someone points this obvious fact out and then your bff shows up and accuses whoever points it out of engaging in (trying to to laugh) “anthropomorphication”. Cripes, even when the specification doesn’t, the judges all the way up the ladder will go and on about the “brain” of some claimed device. There’s a reason for that. A good one.

“ but you refuse to describe that new physical attribute in your claim in a manner”

See Malcolm, you are dissembling again, trying to pass off your “idea” that one optional form of writing a claim is somehow the only way to legally write a claim.

It just is not – per the words of Congress.

As to the word anthropomorphication – it’s a perfect word for your error. Machines just do not think (as the patent law doctrine of mental steps would have ever been applied). You are trying to bas tardize that legal doctrine and misapply it – and have been called out for such dissembling. If you “think” that is how the game is played, you are sadly mistaken.